Complainant is Reshape Wealth, LLC, United States of America (“United States”), represented by Law Office of Elliott J. Brown, United States.
Respondent is Vinay Menda, United States, represented by Rutan & Tucker, LLP, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2020. On February 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 25, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 25, 2020. The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2020. The Response was filed with the Center on March 26, 2020. The Center appointed Georges Nahitchevansky as the sole panelist in this matter on April 14, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant, Reshape Wealth, LLC, is a financial management, advisory, and investment company. Complainant has used the mark and name RESHAPE in connection with its financial services since as early as September 2017. Complainant owns a United States trademark registration for the RESHAPE mark for financial planning and wealth management services (Registration No. 5476934), which issued to registration on May 22, 2018. Complainant also owns and uses the domain name Respondent, Vinay Menda, is the Managing Partner of a venture capital firm by the name of Reshape Holdings LLC. The company Reshape Holdings LLC was created in November 2018. It appears, though, that the company was incorporated under a different name and then changed its name to Reshape Holdings LLC in March 2019. Respondent acquired the disputed domain name in April 2019 and thereafter began using the disputed domain name with a website promoting the services of Reshape Holdings LLC. On December 2, 2019, Complainant’s attorneys sent a demand letter to various individuals at Reshape Holding LLC, including Respondent, regarding the use of the name and mark RESHAPE in connection with the financial services offered by Reshape Holding LLC and the website at the disputed domain name. Respondent, through its attorneys, responded to Complainant’s letter on December 23, 2019. Respondent rejected Complainant’s contentions and demands.1 5. Parties’ Contentions A. Complainant Complainant asserts that it owns rights in the RESHAPE mark in connection with financial services by virtue of Complainant’s substantial use of the RESHAPE mark since 2017 and Complainant’s United States trademark registration for the RESHAPE trademark. Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s RESHAPE mark as it fully and solely consists of the RESHAPE mark with the non-distinguishing country-code Top-Level Domain (“ccTLD”) extension “.co”. Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) is using the disputed domain name to deceptively route Internet users to Respondent’s website, (ii) started using the disputed domain name after Complainant had developed rights in the RESHAPE mark, (iii) has used the disputed domain name with a click through website, and (iv) is using the disputed domain name to create confusion as to the source of Respondent’s business services and to suggest a sponsorship or approval by Complainant of Respondent and its services. Lastly, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith as the disputed domain name is based entirely on Complainant’s RESHAPE mark and the website at the disputed domain name not only copies the look and feel of Complainant’s website but includes the RESHAPE mark with a similar circular logo. Complainant maintains that Respondent has undertaken such actions in bad faith and for the purpose of trading on the goodwill that Complainant as developed in its well-known RESHAPE mark. In that regard, Complainant contends that the use and registration of the disputed domain name is likely to misleadingly divert web users trying to locate Complainant on the Internet thus tarnishing and disparaging the reputation and goodwill associated Complainant’s RESHAPE name and mark. Finally, Complainant further contends that Respondent’s use of a proxy service as an alias to shield Respondent’s identity is further evidence of Respondent’s bad faith in light of Respondent’s actions. B. Respondent Respondent rejects Complainant’s contentions. Respondent contends that the disputed domain name is not confusingly similar to Complainant’s RESHAPE mark, as Complainant’s rights in RESHAPE are narrow and limited to financial planning and wealth management services and because the RESHAPE mark is a weak descriptive mark as the word “reshape” is commonly used by many parties in the context of wealth management. Respondent further contends that it has common law rights in RESHAPE for its venture capital investment services, which are distinct from the services offered by Complainant under its RESHAPE mark. Respondent provides an analysis as to why there is no likelihood of confusion between Complainant’s RESHAPE mark and Respondent’s RESHAPE mark. In that analysis, Respondent argues that Complainant’s RESHAPE mark is weak as it is descriptive and because dozens of third parties use the word “reshape” in connection with financial and investment services. Respondent further argues that Respondent’s services are distinct from those of Complainant, that the marks and logos used by Respondent and Complainant are distinct, and that the buyers of the Parties’ respective services are sophisticated and thus can readily distinguish between the services and offering of the Parties. Respondent asserts that it has rights and a legitimate interest in the disputed domain name as it has used the disputed domain name in connection with a bona fide offering of goods and services before receiving any notice of Complainant’s claims regarding the RESHAPE mark. Respondent maintains that it is commonly known by the disputed domain name and has acquired common law trademark rights in the RESHAPE mark by virtue of its use of the mark since 2018. Respondent also asserts that its website at the disputed domain name is distinct from Complainant’s website as it incorporates entirely unique wording, colors, photographs, placement of images, and layout. Respondent argues that it has not registered or used the disputed domain name in bad faith as Respondent did not register the disputed domain name to sell or rent it to Complainant for profit or to prevent Complainant from reflecting its mark in a corresponding domain name. Respondent maintains that it had no specific knowledge of Complainant at the time it registered the disputed domain name and has not sought to associate itself with Complainant. Respondent asserts that it does not compete with Complainant as the parties offer distinct services and, as such, there is no evidence that Respondent has registered and used the disputed domain name to attract consumers to Respondent’s website and in order to take advantage of Complainant’s rights in the RESHAPE mark. Lastly, Respondent requests that the Panel make a finding that Complainant has engaged in reverse domain name hijacking. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and, (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar While Respondent argues that there is no likelihood of confusion (in the broader trademark sense) between the Parties’ respective RESHAPE marks, such argument is misplaced in the context of the first element, which looks at confusing similarity under the Policy. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.2.1. Complainant has provided evidence that it owns and uses the RESHAPE mark in connection with its financial services. The Panel thus accepts that Complainant has rights in the RESHAPE name and mark. (Complainant has also provided evidence that it obtained a United States trademark registration for the RESHAPE mark well before Respondent registered the disputed domain name in or about April 2019.) With Complainant’s rights in the RESHAPE mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the ccTLD such as “.co”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element, which is basically a standing requirement, is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold. In the instant proceeding, the disputed domain name is identical to Complainant’s RESHAPE mark as it fully and solely consists of the RESHAPE mark in its entirety. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s RESHAPE mark and in showing that the disputed domain name is identical to that trademark. B. Rights or Legitimate Interests In this matter, Complainant has not established the third element of bad faith registration and use, as discussed below, the Panel does not need to address the issue of whether Respondent has rights or a legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith In this proceeding, there is no dispute that Respondent adopted the name and mark RESHAPE for its venture capital services at least a year after Complainant had adopted the RESHAPE mark for its financial planning and wealth management services, and at least six months after Complainant obtained a United States trademark registration for the RESHAPE mark in connection with its services. The question that is thus before the Panel is whether Respondent registered the disputed domain name in good faith in furtherance of a legitimate business purpose, or whether Respondent did so in bad faith in order to take advantage of Complainant’s rights in the RESHAPE mark. For its part, Complainant asserts that Respondent’s actions have been undertaken in bad faith. Complainant contends that (i) its RESHAPE mark is well known and that Complainant has developed strong prior rights in the RESHAPE mark through its substantial use of such, and (ii) Respondent has used the disputed domain name to trade upon Complainant’s rights in the RESHAPE mark in order to misleadingly redirect consumers to its website which copies the look and feel of Complainant’s website. Respondent claims that it has acted legitimately and in good faith and that it has rights in the RESHAPE mark for its own services. Respondent’s entire argument supporting its claim essentially rests on the grounds that (i) Complainant’s RESHAPE mark is a weak mark as it is a descriptive term used by many parties in connection with wealth or financial services, and (ii) Respondent’s financial services are distinct from those offered by Complainant and are targeted to distinct classes of consumers. In support of those contentions, Respondent has provided a number of examples where the common word “reshape” has been used descriptively in a non-trademark or source identifying manner. Respondent also argues that its venture capital services are qualitatively different from the financial planning and wealth management services offered by Complainant. Respondent maintains that it is a venture capital company that invests in technology-enabled companies that utilize real estate to scale whereas Complainant is an investment management and financial planning firm whose sole purpose is to provide its clients personalized wealth management solutions. The evidence and arguments that are before the Panel make this a difficult case, particularly as large portions of Respondent’s arguments concern a likelihood of confusion analysis under trademark laws in the United States. But putting such aside, Respondent’s submitted evidence does not show any third party use of RESHAPE as a trademark for financial services. The evidence simply shows that a number of third parties that offer or promote financial services use the word “reshape” descriptively in the text of their offerings or in articles, such as, by way of example, “[t]hese are the forces that will reshape finance,” or “[h]ow blockchain can reshape finance.” These are not trademark uses and do not in and of themselves establish that Complainant has limited or weak rights in the RESHAPE mark as a brand for financial services, particularly as Complainant has provided some evidence that there are currently no other registered trademarks in International Class 36 (the class that covers financial services) that consist of the mark RESHAPE in the database of the United States Patent and Trademark Office (“USPTO”).1 Thus, based on the evidence before the Panel it is clear that Complainant has some rights in RESHAPE in connection with its financial planning and wealth management services. As to Respondent’s argument that because the Parties services are distinct from one another there is no likelihood of confusion, while this might be the case it is not altogether clear that, in fact, the parties are in completely distinct areas. Complainant appears to offer investments in real estate while Respondent offers venture capital services that involve real estate. Thus, it is arguable whether the services are related for purposes of a likelihood of confusion analysis for trademark infringement or unfair completion under the applicable trademark laws in the United States, an issue that is well beyond the scope of this proceeding. That being all said, Complainant’s evidence is lacking in several respects. While Complainant maintains that it has made “substantial use of the RESHAPE® mark” and that Complainant’s RESHAPE mark is a “well-known mark,” Complainant’s only evidence in that regard is a printout of its current website. Complainant has provided no evidence that Complainant or its RESHAPE mark are well known in the financial services industry, such as through third party articles or brand rankings, or that there has been substantial use or promotion of the RESHAPE mark by Complainant, such as through advertising, marketing, or large volumes of historical sales of RESHAPE branded services. To be sure, conclusory allegations of fame or widespread use that are unsubstantiated with specific evidence are entitled to little or no weight. See WIPO Overview 3.0 at sections 1.3 and 3.1. Also lacking in Complainant’s submissions is evidence that Respondent specifically targeted Complainant and its RESHAPE mark. While Respondent’s use of RESHAPE could arguably be an infringement of Complainant’s rights, there is no evidence before the Panel that suggests that Respondent adopted the name Reshape Holdings LLC or the RESHAPE mark for its financial services for the express purpose of exploiting Complainant’s rights in the RESHAPE mark or to associate itself with Complainant. Indeed, a review of Respondent’s website does not show any references to Complainant and does not establish that Respondent is seeking to exploit any rights that Complainant might have in the RESHAPE mark for purposes of promoting its own services. Although Complainant claims that there are similarities in the look and feel of the parties’ respective websites, the evidence before the Panel does not substantiate Complainant’s claims. At best, there are some arguably limited similarities, such as tabs with generic type headings and uses of background imagery (none of which are identical) that are shared by numerous websites. The evidence simply does not show a systematic or pretextual attempt by Respondent to exploit Complainant’s goodwill in its RESHAPE mark, particularly as there is no evidence in the record that Complainant’s RESHAPE mark is well known in the financial industry or that Respondent was, or was likely, aware of Complainant when it adopted the RESHAPE mark.3 Taking the evidence and arguments that are before the Panel as a whole, what seems obvious is that this is essentially a trademark dispute between two entities that each claim to own rights in the RESHAPE mark for their respective services. While it might have been improvident of Respondent to have adopted the name and mark RESHAPE for its financial services in late 2018, the evidence before the Panel does not support a claim of bad faith registration on the part of Respondent in December 2018. Notably, while Complainant sent a demand letter to Respondent in December 2019, the thrust of the claims made in that letter are essentially for trademark infringement and unfair competition based on the adoption and use of RESHAPE by Respondent for its financial services. Complainant, however, did not make a direct assertion that Respondent was engaged in cybersquatting and only made a passing reference that the domain name was also infringing rights in the RESHAPE mark by including a reference to the Anticybersquatting Consumer Protection Act. Thus, Complainant’s letter in itself suggests that Complainant viewed the dispute as a matter of trademark infringement and unfair competition and not as a case of cybersquatting in bad faith. Indeed, the ultimate demand in Complainant’s December 2, 2019 letter is stated as follows: “Reshape Wealth demands that you immediately CEASE AND DESIST in any further use of the word ‘RESHAPE’ in association with the marketing, sale, distribution or identification of your financial and investment services.” To be sure, to the extent that Complainant may have a claim against Respondent for trademark infringement or unfair competition, such a claim belongs in another forum (such as a United States court) and is beyond the scope of a UDRP proceeding, which is limited to considering whether a disputed domain name has been registered and used in bad faith pursuant to a non-exhaustive list of circumstances set forth in Paragraph 4(b) of the Policy. Here, it has not been established by Complainant on the evidence before the Panel that Respondent registered or used the disputed domain name in bad faith to take advantage of Complainant’s rights in its claimed RESHAPE mark and thus the Complaint fails. D. Reverse Domain Name Hijacking Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking in this proceeding. Paragraph 15(e) of the Rules give instruction to panels in this regard: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” In this case, while the Panel has concluded that Complainant did not establish bad faith registration of the disputed domain name by Respondent, there are open questions regarding Respondent’s registration and use of the disputed domain name for Respondent’s financial services and Respondent’s intent in adopting the RESHAPE mark for its financial services. It was thus not at all unreasonable for Complainant to assert a claim against Respondent regarding the disputed domain name based on Complainant’s rights in its RESHAPE mark. The fact Complainant’s UDRP case failed on the evidence submitted does not, in this case, mean that Complainant had no objective basis for making a claim against Respondent. The request for a finding of reverse domain name hijacking is therefore denied. 7. Decision For the foregoing reasons, the Complaint is denied. Georges Nahitchevansky 1 Given that (i) Complainant sent a demand letter to Reshape Holdings LLC, (ii) Respondent is a managing partner of Reshape Holdings LLC, (iii) the website at the disputed domain name is being used for a website for Reshape Holdings LLC, and (iv) Respondent’s attorneys responded on behalf of Respondent and Reshape Holdings LLC, the Panel hereinafter uses the term “Respondent” to collectively refer to Vinay Menda and Reshape Holdings LLC. 2 Given Complainant’s contention, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the Rules has for the benefit of the Parties and the Panel conducted a limited search of the USPTO database for the term “reshape” in connection with Class 36 services. WIPO Overview 3.0 at paragraph 4.8. The Panel notes that while Complainant’s trademark registration for the RESHAPE mark is the only registration in Class 36 that includes the word “reshape”, Respondent filed on February 26, 2020, two applications for the RESHAPE mark in Class 36 (Serial Nos. 88812026 and 88812034) in connection with its venture capital services. 3 The Panel also notes that Complainant makes assertions in its Complaint that Respondent has used the disputed domain name with a “click-through website” and cites to some cases involving domain names used with click-through advertising websites. Complainant, however, has not provided any evidence showing use of the disputed domain name with a click-through advertise page or website. Accordingly, the Panel similarly disregards such unsubstantiated allegations.
Sole Panelist
Date: April 28, 2020
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